Rockstar Consortium US LP et al v. Google Inc

Filing 126

MOTION to Compel by Rockstar Consortium US LP. (Attachments: # 1 Appendix of Exhibits ISO Motion to Compel, # 2 Affidavit of Amanda Bonn ISO Motion to Compel, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Text of Proposed Order Granting Motion to Compel)(Bonn, Amanda)

Exhibit 9

quinn emanuel trial lawyers | silicon valley
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WRITER'S DIRECT DIAL NO.
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WRITER'S INTERNET ADDRESS
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August 6, 2014
VIA EMAIL
Ms. Amanda Bonn
Susman Godfrey LLP
1901 Avenue of the Stars
Suite 950
Los Angeles, CA 90067

Re:

Rockstar Consortium, et al. v. Google Inc., Case No. 2:13-cv-893 (E.D. Tex.)

Dear Amanda:
I write to summarize and follow up on our August 1 telephonic meet and confer regarding
interrogatories and Rockstar’s document requests.
Rockstar’s Responses to Google’s Interrogatories
You stated that Mr. Lahad will respond to Google’s request that Rockstar supplement its
responses to Interrogatory Nos. 10 and 11. We provided case law supporting Google’s position
in my July 16 letter and still do not have an answer as to whether Rockstar will supplement.
List of Accused Functionalities
On July 10 and 11, Mr. Lahad provided us with a list of accused functionalities. My July 16
letter included questions regarding some of the functionalities listed. You indicated that Mr.
Lahad will respond to those questions.
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Google’s Responses to Rockstar’s Document Requests
We only addressed those requests that either party had questions about. Although we did not
address them in numerical order—having first addressed Rockstar’s questions and then
Google’s—for ease of reference, we’ve addressed them therein in numeric order.
Request No. 18: My July 16 and July 29 letters explained that this request appears to be
duplicative of Request No. 14. During our meet and confer, you confirmed that Request No. 18
is duplicative of Request No. 14 in that it seeks a subset of the documents that Request No. 14
seeks. Both seek documents relating to the operation of non-accused products. As we’ve
previously stated with respect to Request No. 14, we do not believe such documents are relevant
to the claims or defenses here.
Request No. 25: In my July 16 and 29 letters, I explained that, in this request, Rockstar is seeking
high level documents explaining how ads are priced and what goes on in the back-end for
payment to Google in connection with ads. I stated that we were still unsure about what
Rockstar means by how ads are “priced.” To the extent we understand your phrasing, Ads are
“priced” in the auction by determination of actual CPC. Google has produced documents
relating to the auction already. During our meet and confer, you explained that as long as
Google is searching for such documents in custodial data as well, then this issue is resolved. To
the extent that we locate such documents in the extensive searches we are conducting to identify
relevant documents, including custodial searches, we will produce what we locate.
Request No. 34: This is one of the requests in which Rockstar asked Google to produce all
documents related to a statement on a Google webpage regarding the operation of one of
Google’s products or services. In this case, as explained in my July 16 and 29 letters, the
webpage identified in this request does not contain the language attributed to it, and asked
Rockstar if the quoted language is from an earlier version of that page. In my July 29 letter, we
asked if Rockstar has a copy of the webpage Rockstar relied upon? During our meet and confer,
you stated that the existence of that webpage can be verified using the Wayback Machine.
In any event, our July 29 letter made clear that we’ve agreed to produce documents, to the extent
we have not already done so, regarding the technical operation of the Accused Instrumentalities,
which we believe are responsive to this request. We asked Rockstar to explain what types of
documents Rockstar is seeking beyond technical documents discussing the operation of Search
Ads. Your July 25 email demanded documents regarding the purported removal of the quoted
language from Google’s webpage, but did not explain what types of documents other than
technical operation documents it believes are called for by this request. On our meet and confer,
you explained that Rockstar is seeking documents relating to the decision by Google to put the
statement in question on its webpage, how it decided to describe its product in that way, and why
it decided to remove the language from its webpage. While we appreciate that Rockstar finally
provided an explanation, we do not agree that such documents are relevant. If Rockstar has
documents relating to how the Accused Instrumentalities operate—which Google agreed to
produce—it does not need additional documents relating to the drafting of Google webpages.
Thus, Google will produce, to the extent it has not done so already, technical documents
responsive to this request.
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Request No. 35: This request is similar to No. 34 in that Rockstar seeks documents relating to
three statements on Google webpages. Google refers Rockstar to its response to Request No. 34.
With respect to the statements “Use matching options with your keywords to help control which
searches can trigger your ad” and ““When choosing the appropriate match type for a keyword,
we typically recommend starting with broad match to maximize your potential to show your ads
on relevant searches,” Google believes that such documents, to the extent they exist, are covered
by prior requests and Google has agreed to produce such documents.
With respect to the phrase “Use the search terms report to monitor which keyword variations
triggered your ads,” we refer you to our response to Request No. 36.
Request No. 36: This request asks for Google to produce documents relating to “search terms
reports” and how they are used. As explained in my July 16 and 29 letters, Rockstar explained
that this is relevant because search terms are an element of the asserted claims. Rockstar is
trying to determine what the “search terms report” is and how it operates. As further explained
in my letters, however, Rockstar’s patents, do not cover search terms. During our meet and
confer, you explained that it is Rockstar’s position that its claims read on returning ads based on
a search argument, and also read on search refinement. We continue to disagree that such
documents are relevant to Rockstar’s claims.
Request No. 44: This request seeks all documents related to the Accused Instrumentalities’
abilities to collect and use prior purchasing information, including through Google Wallet or
otherwise, including but not limited to documents related to the use, design, development,
testing, and/or modification of this functionality. Rockstar clarified that it is seeking information
regarding the design, development, importance, and marketing of such functionality, and how it
is used in search and search plus ads. We explained in my July 16 letter that Google does not
use user-specific prior purchasing information in Search or Search Ads. Your July 25 email
asked that Google provide “a high-level overview of how Google uses any prior purchasing
information through Google Wallet or otherwise . . . and provide documents sufficient to allow
[Rockstar] to verify that.” In my July 29 letter, we asked that Rockstar explain how any use of
prior purchasing information could be relevant to the claims. We further noted that in my June
18 letter, we explained that to the extent that Rockstar is seeking documents relating to the
operation of functionalities accused of infringement, such documents (if they exist) have already
been produced.
In response to Google’s questions, you stated that Rockstar’s position that Google’s use of any
prior purchasing information is relevant because Google is refusing to produce documents based
on its proposed claim construction. In the first instance, that really is not an explanation for why
Rockstar believes such documents are relevant to the claims or defenses in this case. Moreover,
the explanation does not make sense. Rockstar did not offer any construction relevant to the
claim at issue here, so the accusation that Google’s construction narrows the claim language is
not well taken. In fact, Rockstar has not identified any problems with Google’s proposed
construction. Additionally, if Rockstar is seeking all information about every use Google may
make of prior purchasing information, that is very burdensome and has minimal connection to
the claims of the ‘883 patent, which are specific to use of “prior purchasing information” in

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“creating user profile data for the user.” That is the language of the claims, not Google’s
construction of them.
Request No. 45: When trying to evaluate Rockstar’s request regarding “language targeting,” we
asked if Rockstar is referring to what is described here:
https://support.google.com/adwords/answer/1722078?hl=en?. On our meet and confer, you
confirmed that this is correct. Google will produce documents relating to AdWords’ “language
targeting” feature located in a reasonably, diligent search.
Request No. 51: This request seeks all documents related to Google’s “Search Lab,” including
but not limited to guidelines, evaluations, analyses, methodologies, summaries, presentations,
and reports. As I explained in my July 29 letter, when we previously discussed this request,
Rockstar explained that it is looking for testing information along the lines of what the parties
discussed during the July 8 meet and confer regarding dashboard information. If Rockstar is
seeking something different than that, I asked that Rockstar explain what it is so that we can
consider the request. You stated that you would get back to us.
Request No. 53: This request seeks all documents related to the “Knowledge Graph”
functionality, including but not limited to documents related to the use, design, development,
testing, and/or modification of “Knowledge Graph.” Rockstar explained that it is looking at the
“Knowledge Graph” from the perspective of user profile data. In your July 10 email, Rockstar
claimed this also relates to search refinement. As explained in my July 29 letter, with respect to
the former, to the extent that “Knowledge Graph” uses user profiles, such documents would have
already been produced or will be produced in response to Rockstar’s requests relating to
personalized search results. With respect to “search refinement,” I stated in my July 29 letter
that we need you to explain how you believe “Knowledge Graph” is used for “search
refinement” because we do not understand the connection. You said that Mr. Lahad will respond
to this question.
Request No. 54: This request seeks the same types of documents relating to “Social Search.” In
my July 29 letter, we asked Rockstar to point us to whatever public information it is relying on to
identify “Social Search” so we can confirm we understand what you are interested in. You said
Mr. Lahad will respond to this question.
Request No. 60: In my July 16 letter, we asked Rockstar if it is looking for documents relating
to “historical clickthrough rates.” In your July 25 email, you stated yes. With this clarification,
we are looking into Rockstar’s request. As stated in my July 29 letter, we were not certain,
however, what is meant by design, development, testing, or modification with respect to
historical CTR. A historical CTR is just that. During our meet and confer, you explained that
Rockstar is not seeking information about actual CTR, but documents regarding the
functionalities used to determine CTR, whether current or historical. With that clarification, as
stated in my June 18 letter, we believe such documents have already been produced, and to the
extent that we locate such documents in the extensive searches we are conducting to identify
relevant documents, including custodial searches, we will produce what we locate.

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Request No. 68: As explained in my July 29 letter, when we discussed this request on July 8 or
9, Rockstar acknowledged that this is covered by prior requests regarding testing and the
dashboard. If this request seeks unique information, we asked that Rockstar please explain what
it is looking for. You said you would get back to us.
Request Nos. 82 and 83: With respect to these requests regarding documents relating to
Google’s acquisitions of certain companies, you stated that Rockstar is okay with Google’s
response for now and will not move to compel. But, Rockstar reserves its right to come back and
ask for more documents.
Request No. 93: My July 29 letter laid out the documents from prior litigations that Google
agrees to produce to Rockstar. During our meet and confer, you asked for an explanation as to
how Google decided which prior litigations to produce documents from. I responded that
Personalized User Model v. Google and PA Advisors v. Google overlap the most in terms of
accused functionalities with what is at issue in this case. Both cases accused Google of
infringing patents covering personalization services, and both accused Google Search and Search
Ads of infringing those patents. I explained that the reason why Google agreed to re-produce its
production from Personalized User Model, but not PA Advisors, is because damages were
bifurcated in the former, so there are less third party confidential documents for Google to worry
about inadvertently reproducing here. As we explained in my July 29 letter, we are removing
third party confidential information from the production, but also need Rockstar’s confirmation
that Google may clawback any such third party confidential information that is inadvertently
produced.
As for the other cases identified in Rockstar’s document request letter, I explained that Function
Media and Xerox related only to AdSense for Content, which is not accused in this case.
GeoTag and British Telecommunications both had an extensive number of accused products,
such that it is very burdensome to parse through the documents in those cases to identify those
that address functionalities accused of infringing here. Rockstar also requested documents from
IP Engine and Bid for Position. Although those cases accused Search Ads, the accused
functionalities were different than those here, so the documents are not relevant to Rockstar’s
claims. Finally, Rockstar requested documents from any lawsuit between Google and Overture
Services and/or Yahoo!. Given how long ago that lawsuit was, it is unduly burdensome for
Google to search for such documents. You indicated that you will discuss with your team our
position with respect to these cases.
In addition to the documents Google agreed to produce from Personalized User Model and PA
Advisors, you requested that Google produce the following


The infringement reports in Personalized User Model and PA Advisors. Google does not
agree to produce the reports of the opposing party’s experts. They are not Google
admissions and thus there is no reason why Rockstar should need them.



The damages reports (both Google’s and the opposing party’s) in Personalized User
Model and PA Advisors. I explained that the reason why Google had not offered to
produce damages reports is because they include third party confidential information and
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so Google would have to go through the burden of redacting them before production.
You responded that Rockstar might agree that Google can redact those reports for how,
pending providing notice to the other party. Google will agree to produce its damages
expert’s report from PA Advisors, but not the opposing party’s for the reasons discussed
above with respect to infringement reports. There was no such report in Personalized
User Model v. Google.


Marked Google-produced trial exhibits in Personalized User Model v. Google, even if
not admitted at trial. Google will produce such documents, with the exception of any
containing third party confidential information.



With respect to depositions relating to the Accused Instrumentalities from Personalized
User Model v. Google and PA Advisors v. Google, you stated that Rockstar expects
Google to produce both 30(b)(6) and individual depositions that discuss the Accused
Instrumentalities, including marketing depositions. Google will produce both 30(b)(6)
and individual technical depositions discussing the operation of the Accused
Instrumentalities, as well as marketing depositions to the extent they exist.



You requested that Google produce 30(b)(6) depositions regarding document
preservation policies or practices. We are checking to confirm whether any such
depositions were taken in Personalized User Model and PA Advisors. If they were,
Google will produce them.

Finally, you asked if Google will produce the settlement agreements for all of the cases identified
in your document request letter. We are still in the process of identifying comparable license
agreements and giving third parties notice pursuant to the terms of those agreements. To the
extent that we determine such agreements (if they exist) are comparable, and we have permission
to produce them from the other parties to those agreements, we will do so.
Request No. 113: In my July 16 and 29 letters, we noted that Rockstar explained that it is looking
for documents regarding the marketing and technical capabilities of the Accused
Instrumentalities, and thus this request is likely covered by prior requests. As noted in my July
29 letter, we’ve already agreed to search for such documents. You confirmed on our meet and
confer that this satisfies this request and there are not further categories of documents being
sought.
Request No. 116: Rockstar has indicated that it requests that Google produce “high level”
financial data. In my July 16 and 29 letters, we asked Rockstar to explain what it means by
“high level” financial data. During our meet and confer, you stated that high level means “top
level” detail regarding gross and net revenues, costs, and profits, for the accused products. In
response, I noted that Rockstar had initially asked for this information on a quarterly basis,
which is what Google is endeavoring to provide. I asked if “high level” is at a level higher than
that, and you responded not. Thus, it is our understanding that Rockstar’s request for “high
level” financial data is the same as what Google has already agreed to provide.
Request No. 142: In my July 16 letter, we stated that Google will produce responsive documents
regarding prior art systems asserted by Google as prior art to the patents-in-suit that are located
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in a reasonably, diligent search. Your July 25 email asks us to confirm that the response is not
limited to “prior art systems.” As explained in my July 29 letter and again on our meet and
confer, we had difficulty understanding what documents Rockstar is seeking if not limited to
“prior art systems.” I asked, for example, were Google to search for all documents relating to a
prior art patent, what would those documents be? You responded that, for example, if there is a
prior art patent and someone at Google has done an analysis of it, or determined that it reads on
Google’s products, such documents would be responsive. However, we do not know of an
effective way of searching for such documents for prior art patents or publications. Thus, this
request, as it relates to patents and publications is unduly burdensome.
Request No. 143: This request seeks all documents that refer or relate to whether any invention
disclosed in any of the Patents-in-Suit, or any product that embodies or uses such an invention,
has been commercially successful. We explained that this seems odd because Rockstar needs to
identify the products that embody or use an invention. Rockstar stated that is looking for
documents showing that the Accused Instrumentalities are commercially successful, and
acknowledged that this is likely covered by prior requests. In my July 16 and 29 letters, we
pointed Rockstar to Google’s 10Ks, which it already produced, and the summary financial data
regarding the Accused Instrumentalities Google agreed to produce, which will reflect the
commercial success of Google’s products. We asked what other types of documents Rockstar is
looking for in connection with this request, and why is what Google already agreed to produce
insufficient. You responded that Rockstar seeks documents relating to market share, which
Google already agreed to search for in response to a different request. You further stated that
Rockstar seeks analyses or presentations that talk about commercial success or why the Accused
Instrumentalities have been successful. To the extent that we locate such documents in the
extensive searches we are conducting to identify relevant documents, we will produce what we
locate.
Request No. 145: This request seeks all documents that refer or relate to whether anyone has
praised, criticized, or discussed the significance of any invention disclosed in any of the Patentsin-Suit, or any product or instrumentality that embodies or uses any such invention. As
explained in my July 29 letter, we are uncertain what documents Google could produce
responsive to this request. We asked if Rockstar is asking Google to search for documents that
praise, criticize, or discuss Google Search or Search Ads? You responded that Rockstar is
looking for documents that Google has that discuss the advantages of Google Search or Search
Ads, or how Google’s methods with respect to both are better than others. To the extent that we
locate such documents in the extensive searches we are conducting to identify relevant
documents, we will produce what we locate.
Request No. 150: As explained in my July 29 letter, we do not understand what it means for a
document to be “related” to an interrogatory. We provided an example in my letter. During our
meet and confer, you stated that you will go back and review the interrogatories Rockstar has
propounded and let us know if there are any in particular that it is concerned about and let us
know.
Rockstar also raised a couple of questions without identifying the specific requests at issue.

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First, Rockstar asked about Google’s position regarding the production of dashboard-related
documents and whether Google is refusing to provide responses to Rockstar’s questions
regarding what is stored in the dashboard until Google’s interrogatory response on that issue is
due. I explained that in response to those document requests seeking testing and dashboard
information, Google has already agreed to search for documents relating to test results for
launched changes to the Accused Instrumentalities, and will produce what is located in a
reasonably, diligent search. I further noted, as I did in my July 29 letter and my June 18 letter,
that documents responsive to this request may be included in Google’s prior production, and that
additional documents may also be located in Google’s searches of custodial data. Finally, I
explained that Google is diligently investigating the data stored or accessed in the dashboard by
the teams relevant to the accused functionalities so that Google can respond to Rockstar’s
interrogatory on this issue, but that Google does not yet have all of the information necessary to
provide a response. I explained that, at this point, Google is not refusing to produce dashboardrelated information, but is still investigating Rockstar’s requests. You responded that based on
these representations, Rockstar will not move to compel the production of such information at
this time.
Second, with respect to those requests asking Google to search for documents in the possession
of or provided to the Board, members of the executive management group, and other senior level
employees, you asked if Google was refusing to produce those documents. I explained that we
are searching the non-email ESI of the key custodians who we expect to have relevant
documents, and that we expect that any documents that more senior level employees may have
would be duplicative. It is burdensome and unnecessary for Google to search the files of senior
level employees if there is no expectation that such searches will uncover unique documents.
Further, Google is searching central repositories where we expect documents responsive to
Rockstar’s various document requests to be stored. In response, you asked us to identify which
custodians’ ESI we are searching, in addition to the 20 that Google identified as “most
significant” custodians. We propose that the parties agree on a date on which they will exchange
the lists of custodians whose non-email ESI they are searching.
Finally, you asked about Google’s position regarding the production of documents that post-date
the Complaint. As we’ve previously explained, Rockstar agreed in the ESI order that such
documents need not be searched for or produced. That said, we’ve already made clear that
Google will produce financial data through the present. In any event, Rockstar asked that
Google produce communications with non-party witnesses, and agreed that this would apply to
Rockstar as well. I explained that Google is concerned with opening a floodgate with respect to
documents that Rockstar agreed need not be collected, particularly after Google started
collecting and processing documents. In response, you stated that you would confirm with your
team that there are no other categories of documents that Rockstar seeks that would deviate from
its agreement on this issue.

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As always, we remain willing to meet and confer in good faith to resolve discovery disputes.
Very truly yours,

Andrea Pallios Roberts

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